From Law360 (subscription required):
Bilski — A Financial Patent’s Waterloo?
Law360, New York (July 23, 2010) — Michael Lewis’ best-seller, The Big Short, reads like the best of Agatha Christie’s mysteries, chronicling the collapse of the subprime mortgage market and its infectious spread to the underpinnings of our credit system, methodically wiping out wealth measured in trillions of dollars.
On the heels of its two-year recovery, these markets are now confronted with a new and complex infrastructure of financial regulations that might even embarrass Carter Glass and Henry Steagall of Glass-Steagall fame. To this, now add the U.S. Supreme Court’s ruling in Bilski — a ruling many thought would remove patent protection from this industry. Did it?
. . .
When the Supreme Court issued its Bilski decision, a divided court rejected both the narrowing test of the Federal Circuit and an absolute bar to business method patents — a ruling that may preserve many of the business method patents in the financial world. No Waterloo today.
–By James M. Bollinger, Troutman Sanders LLP
From Court House News Services:
The Federal Circuit has clarified the circumstances under which courts may block attorneys from prosecuting certain patents to keep them from inadvertently disclosing confidential information gleaned in another case.
The ruling marks the first time the Washington, D.C.-based court has outlined the standards and scope of patent prosecution bars, which prohibit attorneys from using confidential material exchanged during litigation for any other purpose.
The decision stems from Deutsch Bank’s efforts to block attorneys for Island Intellectual Property from prosecuting any patents related to financial “deposit sweep services.”
Island had sued the bank for patent infringement, and Deutsch was concerned that if Island’s lawyers gained access to its confidential documents, they might disclose that sensitive information while prosecuting Island’s patents in other cases…
See complete order here: In Re Deutsche Bank Trust Co. Americas
“Global Standard Financial, Inc. (GSF) www.gsf-inc.com announced today the awarding of two patents by the US Patent and Trademark Office which cover the fundamental processes necessary to securely create paperless Check 21-based checks or Electronic Payment Orders (EPO). The term EPO was described in a November 2009 Chicago Federal Reserve Policy Paper which outlined the benefits of paperless checks and was used to distinguish pure digital checks from paper-based Check 21 image processing.”
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February 25th, 2010
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“U.S. Bancorp stands to lose $200 million, and maybe more, in a patent dispute that the Minneapolis-based banking company and other banks across the country are fighting in a federal court in Texas…”
Read more here.
Plaintiff DataTreasury Corp. is asserting six U.S. patents against various defendants in this suit:
- U.S. Patent No. 5,910,988 for an invention in remote image capture with centralized processing and storage
- U.S. Patent No. 6,032,137 for an invention in a remote image capture with centralized processing and storage
- U.S. Patent No. 5,265,007 for an invention of a central check clearing system
- U.S. Patent No. 5,583,759 for an invention with a mechanism for expediting the deposit, transport, and submission of checks into the payment system
- U.S. Patent No. 5,717,868 for an invention with an electronic payment interchange concentrator
- U.S. Patent No. 5,930,778 for an invention with a system for expediting the clearing of financial instruments and coordinating the same with invoice processing at the point of receipt
February 22nd, 2010
admin
Mobile banking platform provider MShift files patent action against Digital Insight over mobile banking technology
MShift, Inc. has launched a patent infringement suit against Digital Insight Corporation as well as Digital Insight’s customers. Community Trust Financial Corporation and Community Trust Bank are named as co-defendants. The action asserts that the mobile banking technology that Digital Insight provides its banking customers infringes on a patent awarded to mShift in 2005. MShift technology powers over 200 US Mobile Banking applications for some of the largest financial institutions in America, as well as for local banks and regional credit unions across the USA.
The action, filed in the United States District Court in the Northern District of California, asserts that the mobile banking technology Digital Insight is providing its customers, such as Community Trust Bank, infringes on MShift’s United States Patent No. 6,950,881 (the ‘881 Patent’). The ‘881 Patent’ is entitled a ‘System for Converting Wireless Communications for a Mobile Device’ and was awarded to MShift on September 27, 2005. The ‘881 Patent’ is a fundamental patent that covers communications between a mobile device and a network site. The inventions of the ‘881 Patent’ enable mobile devices such as Smartphones to access network sites such as online or home banking sites by means of a conversion and adaptation engine which performs translations between the language of the network site (e.g. HTML) and the language supported by the mobile device (e.g., WAP, HDML, HTML) as required. By dynamically adapting and configuring data from one or more sources for presentation and use via mobile phones, the ‘881 Patent’ describes an innovative conversion engine that defines the modern mobile banking experience.
More here on the RealTime Data lawsuit against Goldman Sachs, Thomson Reuters, Nyse Euronext, et al.
Roger Russell is a tax attorney and a legal and accounting journalist with expertise across a wide spectrum of tax, legal and accounting issues. In his article “The fight against tax patents: Profession, institute rally behind bill to block tax strategy patents,” appearing in a recent edition of Accounting Today he provides and update on tax method patents, including a discussion of recent case law and efforts on Capital Hill to pass legislation.
In his article “Business methods need patents” appearing in The National Law Journal, Wayne Sobon from Accenture argues that the Supreme Court should acknowledge our tech-based economy by reversing Bilski:
Now companies and patent owners across wide swaths of our economy are waking up to how the PTO, deploying a “test” more relevant to the carriage makers or leather dyers of the 19th century than to the finance-, Internet- and services-based economy of the 21st century, is undermining the very nature of what our patent system was meant to encompass.
The United States needs every possible advantage to remain competitive in a linked global economy that is increasingly service- and information-driven. Bilski is a classic case of judicial overreach, with the potential to damage that competitiveness at a crucial time. We can only hope the Supreme Court sees it that way, as well.
Dennis Posadas writes about the value of intellectual property to technology ventures when seeking funding:
For a bank loan, the situation is often difficult for technology startups because their value is not often premised on physical collateral, but more on intellectual collateral, which bankers often cannot value accurately. Try showing your Philippine or US patent plaque to a banker, and let’s see how far you will go with your loan application.
“Jumpstarting your tech venture”